IPR2016-01449
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`PATENT NO. 8,155,342
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`VOLKSWAGEN GROUP OF AMERICA INC.
`Petitioner
`v.
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`BLITZSAFE TEXAS, LLC
`Patent Owner
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`
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`Patent No. 8,155,342
`Issue Date: April 10, 2012
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`__________________________________________________________________
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`BLITZSAFE TEXAS, LLC’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,155,342
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`Case No. IPR2016-01449
`__________________________________________________________________
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`TABLE OF CONTENTS
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`IPR2016-01449
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`PATENT NO. 8,155,342
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`I.
`II.
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`III.
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`INTRODUCTION ........................................................................................... 1
`THE PETITION SHOULD NOT BE INSTITUTED BECAUSE
`PETITIONER FAILS TO GIVE A SUFFICIENT CONSTRUCTION
`FOR "INTEGRATION SUBSYSTEM" ......................................................... 3
`PETITIONER HAS NOT DEMONSTRATED A REASONBLE
`LIKELIHOOD OF SUCCESS FOR ANY OF GROUNDS 1-4 AND
`THE PETITION SHOULD BE DENIED. ...................................................... 5
`A.
`Requirements for Obviousness Under 35 U.S.C. § 103........................ 5
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`B.
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`C.
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`The Petition Suffers from Evidentiary Deficiencies ............................. 9
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`Claims 49-52, 55-57, 62-64, 66, 68, 71, 73-76, 79, 80, 94, and
`95 Are Not Obvious in View of Tranchina and Silvester
`(Ground 1) ........................................................................................... 10
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`1.
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`2.
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`3.
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`Neither the Tranchina nor the Silvester Reference Teach
`or Disclose the “Audio Generated by the Portable
`Device” Limitation .................................................................... 11
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`Petitioner Fails to Teach or Disclose an “Integration
`Subsystem” ................................................................................ 14
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`The Alleged Combination is Improper and Does Not
`Address the Deficiencies of Tranchina and Silvester ............... 14
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`D.
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`Claims 53, 54, 56, 70, 77, 78, 97, 99-103, 106, 109-111, 113,
`115, and 120 Are Not Obvious in View of Tranchina, Silvester,
`and Berry (Ground 2) .......................................................................... 16
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`1.
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`2.
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`3.
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`Ground 2 Fails to Teach or Disclose the "Audio
`Generated by the Portable Device" Limitation ......................... 16
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`Ground 2 Fails to Teach or Disclose the “Integration
`Subsystem” Limitation .............................................................. 17
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`The Alleged Combination is Improper and Does Not
`Address the Deficiencies of Tranchina, Silvester and
`Berry .......................................................................................... 17
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`i
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`E.
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`1.
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`2.
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`3.
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`Ground 3 Fails to Teach or Disclose the “Audio
`Generated by the Portable Device” Limitation required
`by all claims .............................................................................. 18
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`Ground 3 Fails to Teach or Disclose the “Integration
`Subsystem” Limitation .............................................................. 20
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`The Alleged Combination is Improper and Does Not
`Address the Deficiencies of Tranchina and Shibasaki ............. 20
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`F.
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`Claims 53, 54, 56, 70, 77, 78, 97, 99-103, 106, 109-111, 113,
`115, and 120 Are Not Obvious in View of Tranchina,
`Shibasaki, and Berry............................................................................ 21
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`1.
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`2.
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`Ground 4 Fails to Teach or Disclose the "Audio
`Generated by the Portable Device" Limitation required
`by all claims .............................................................................. 21
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`Ground 4 Fails to Teach or Disclose the “Integration
`Subsystem” Limitation .............................................................. 21
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`3.
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`The Alleged Combination is Improper and Does Not
`Address the Deficiencies of Tranchina, Shibasaki and
`Berry .......................................................................................... 22
`IV. CONCLUSION .............................................................................................. 22
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`ii
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`IPR2016-01449
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`PATENT NO. 8,155,342
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`Claims 49-52, 55, 57, 62-64, 66, 68, 71, 73-76, 79, 80, 94 and
`95 Are Not Obvious in View of Tranchina and Shibasaki
`(Ground 3) ........................................................................................... 17
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`TABLE OF AUTHORITIES
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`IPR2016-01449
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`PATENT NO. 8,155,342
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` Page(s)
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`Cases
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00355 (PTAB, June 26, 2015) .............................................................. 6
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`C.B. Distributors, Inc. v. Fontem Holdings 1 B.V.,
`IPR2013-00387 (PTAB, Dec. 24, 2014) .............................................................. 8
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`Cisco Sys., Inc., v. C-Cation Techs., LLC,
`IPR2014-00454 (PTAB, Aug. 29, 2014) .............................................................. 7
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`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015), cert. granted, No. 15-446, 2016
`WL 205946 (Jan. 15, 2016) .................................................................................. 3
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`GN Resound A/S v. Oticon A/S,
`IPR2015-00103 (PTAB, June 18, 2015) ........................................................ 8, 15
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`Google Inc. v. EveryMd.com LLC,
` IPR2014-00347 (PTAB, May 22, 2014) ..................................................... 4, 6, 9
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`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .......................................................................................... 2, 5, 9
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`In re Kahn,
`441 F.3d at 988 ..................................................................................................... 7
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`Kinetic Concepts v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ............................................................................ 5
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 7, 8, 9, 15
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`Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM-2012-00003 (PTAB, Oct. 25, 2012) ........................................................... 6
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`Plant Science, Inc. v. The Andersons, Inc.,
`IPR2014-00939 (PTAB, Dec. 17, 2014) .............................................................. 7
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`iii
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`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) ............................................................................ 3
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`IPR2016-01449
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`PATENT NO. 8,155,342
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`Whole Space Indus. v. Zipshade Indus.,
`IPR2015-00488 (PTAB, July 24, 2015) ....................................................... 6, 7, 8
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`Statutes
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`37 C.F.R. § 42.6(a)(3) ................................................................................................ 7
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`37 C.F.R. § 42.100(b) ................................................................................................ 3
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`37 C.F.R. § 42.104(b) ...................................................................................... 2, 8, 15
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`37 C.F.R. § 42.108(c) ................................................................................................. 1
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`37 C.F.R. § 42.65(a) ................................................................................................... 9
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`35 U.S.C. § 103 .......................................................................................................... 5
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`35 U.S.C. § 314(a) ..................................................................................................... 2
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`EXHIBIT LIST
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`IPR2016-01449
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`PATENT NO. 8,155,342
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`Exhibit #
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`Name
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`2001
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`2002
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`IPR2016-00418 Decision
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`IPR2016-00419 Decision
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`v
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`I.
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`INTRODUCTION
`On July 20, 2016, Volkswagen Group of America, Inc. (“Petitioner”)
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`IPR2016-01449
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`PATENT NO. 8,155,342
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`submitted a Petition to institute inter partes review (“IPR”) of U.S. Patent No.
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`8,155,341 (Ex. 1001, “the ’342 Patent”), challenging claims 49-57, 62-64, 66, 68,
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`70-71, 73-80, 94-95, 97, 99-103, 106, 109-111, 113, 115, and 120 (“the
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`Challenged Claims”). Blitzsafe Texas, LLC (“Patent Owner”) requests that the
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`Board deny institution of inter partes review because Petitioner has not
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`demonstrated a reasonable likelihood that it would prevail in showing
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`unpatentability of any of the challenged claims on the grounds asserted in its
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`Petition as required under 37 C.F.R. § 42.108(c).
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`The ’342 Patent generally discloses systems for wirelessly integrating a
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`portable device to a car audio/video system such that audio generated on the
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`portable device is heard through the car audio/video system. The system allows
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`the user to control the portable device using the controls of the car audio/video
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`system and to view information regarding the audio being generated by the
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`portable device on the display of the car audio/video system. See Ex. 1001 (’342
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`Patent) at Abstract, Claim 1. An integration subsystem converts the control
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`commands of the car audio/video system into a format recognizable by the portable
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`device, and it converts information from the portable device into a format
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`recognizable by the car audio/video system for subsequent display. See id.,
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`1
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`IPR2016-01449
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`PATENT NO. 8,155,342
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`Abstract, Claims 5, 6.
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`Petitioner’s request for inter partes review should be denied for at least the
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`following reasons addressed more fully in this Preliminary Response:
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`(1) The Petition fails to properly construe the claim terms “integration
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`subsystem” and “multimedia device integration system.”
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`(2) The Petition does not “specify where each element of the claim is found
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`in the prior art patents or printed publications relied upon,” 37 C.F.R.
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`§ 42.104(b)(4), because each Ground has at least one of the following deficiencies:
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`(i) failing to map each claim term to a specific teaching from an asserted reference;
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`(ii) providing citations to the asserted references that do not teach the claim
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`elements against which such citations are applied; and (iii) mischaracterizing the
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`citations to the asserted references.
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`(3) The Petition fails identify the difference(s) between the claims and the
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`asserted references as required by Graham v. John Deere Co., 383 U.S. 1, 17-18
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`(1966).
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`(4) The Petition supports its assertions of obviousness with mere conclusory
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`statements.
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`Due to at least these deficiencies, the Petition does not establish “a
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`reasonable likelihood that Petitioner would prevail with respect to at least one of
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`the claims challenged in the petition.” 35 U.S.C. § 314(a). Patent Owner
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`IPR2016-01449
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`PATENT NO. 8,155,342
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`explicitly reserves the right to provide further distinctions between the prior art and
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`the challenged claims. The deficiencies of the Petition noted herein, however, are
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`sufficient for the Board to find that Petitioner has not met its burden to
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`demonstrate a reasonable likelihood that it would prevail in showing
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`unpatentability of any of the challenged claims.
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`II. THE PETITION SHOULD NOT BE INSTITUTED BECAUSE
`PETITIONER FAILS TO GIVE A SUFFICIENT CONSTRUCTION
`FOR "INTEGRATION SUBSYSTEM"
`In an inter partes review, claim terms in an unexpired patent are interpreted
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`according to their broadest reasonable construction in light of the specification of
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`the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed
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`Techs., LLC, 793 F.3d 1268, 1277-78 (Fed. Cir. 2015), cert. granted, No. 15-446,
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`2016 WL 205946 (Jan. 15, 2016). Under this standard, claim terms are given their
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`ordinary and customary meaning as would be understood by one of ordinary skill
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`in the art in the context of the entire disclosure. See, e.g., In re Translogic Tech.,
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`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`The Board has already analyzed the term “integration subsystem” at length
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`in the related IPR2016-00419 and -00418 proceedings. The term “integration
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`subsystem” was also at the heart of Petitioner's claim construction arguments.
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`Blitzsafe Texas, LLC v. Honda Motor Co., Ltd. et al., 2:15-cv-01274
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`(consolidated) (E.D. Tex.) (the “Texas Litigation”). In both the Texas Litigation
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`IPR2016-01449
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`PATENT NO. 8,155,342
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`and prior PTAB proceedings, the Court/PTAB adopted a construction of the term
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`“integration subsystem.” In the IPR2016-00419 proceedings, the Board construed
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`“integration subsystem” as meaning:
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`A subsystem to perform at least: (1) connecting one or more portable
`devices or inputs to the car audio/video system via an interface, (2)
`processing and handling signals, audio, and/or video information, (3)
`allowing a user to control the one or more portable devices via the car
`audio/video system, and (4) displaying data from the one or more
`portable devices on the car audio/video system.
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`Toyota Motor Co. v. Blitzsafe Texas, LLC, IPR2016-00419, Decision Denying
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`Institution, Paper No. 13 at 15-16. (P.T.A.B., July 19, 2016) (Ex. 2001) see also
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`Toyota Motor Co. v. Blitzsafe Texas, LLC, IPR2016-00418, Decision Denying
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`Institution, Paper No. 13 (P.T.A.B., July 8, 2016) (Ex. 2002). In arriving at the
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`above construction, the Board extensively reviewed the intrinsic record and arrived
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`at the above construction independently of the parties and in light of the
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`specification, other language of the claims, as well as the prosecution history.
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`Here, the Petitioner has failed to properly address the scope of the claims
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`and merely provides the circular construction that an “integration subsystem” is a
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`“subsystem that performs the connecting, signal processing, device control, and
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`data display described by the ’342 patent.” Pet. at 9.
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`Petitioner's proposed construction fails to address the processing and
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`IPR2016-01449
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`PATENT NO. 8,155,342
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`handling of audio and/or video information, and not merely signals. Moreover,
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`Petitioner includes a reference to features “described by the ’342 patent” instead of
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`proper claim boundaries. Because the Petitioner did not apply an actual
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`construction within the boundaries of the '342 specification and file history, its
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`proposed construction should be rejected and the Board's prior construction should
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`be adopted. Moreover, without applying a proper construction, the Petition must
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`be denied as to all Grounds as described in further detail below.
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`III. PETITIONER HAS NOT DEMONSTRATED A REASONBLE
`LIKELIHOOD OF SUCCESS FOR ANY OF GROUNDS 1-4 AND
`THE PETITION SHOULD BE DENIED.
`A. Requirements for Obviousness Under 35 U.S.C. § 103.
`The question of obviousness is resolved on the basis of underlying factual
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`determinations, including: (1) the scope and content of the prior art; (2) any
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`differences between the claimed subject matter and the prior art; (3) the level of
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`skill in the art; and (4) where in evidence, so called secondary considerations.
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`Graham, 383 U.S at 17-18. In a proper obviousness analysis that establishes a
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`reasonable likelihood of prevailing in an inter partes review, each of the Graham
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`factors must be considered, and a petition that ignores any factor is deficient. See
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`Kinetic Concepts v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012)
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`(“Indeed, courts must consider all of the Graham factors prior to reaching a
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`conclusion with respect to obviousness.”). Therefore, an obviousness analysis that
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`IPR2016-01449
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`PATENT NO. 8,155,342
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`does not identify the difference(s) between the claim and the prior art is legally
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`inadequate to support a conclusion of obviousness. See Whole Space Indus. v.
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`Zipshade Indus., IPR2015-00488, Decision Denying Institution of Inter Partes
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`Review, Paper 14 at 15 (PTAB July 24, 2015) (“[N]or does the Petition identify
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`the differences between the prior art and the claims at issue, which is one of the
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`fundamental factual inquiries underlying an obviousness analysis.”); Google Inc. v.
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`EveryMd.com LLC, IPR2014-00347, Decision Denying Institution of Inter Partes
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`Review, Paper 9 at 25 (PTAB May 22, 2014) (“Rather, Petitioners’ summaries,
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`quotations, and citations from both references . . . place the burden on us
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`to…identify any differences between the claimed subject matter and the teachings
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`of [the prior art ].”); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., CBM-
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`2012-00003, Paper 7 at 2-3 (Order) (PTAB Oct. 25, 2012) (“Differences between
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`the claimed invention and the prior art are a critically important underlying factual
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`inquiry for any obviousness analysis.”); Apple, Inc. v. Contentguard Holdings,
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`Inc., IPR2015-00355, Decision Denying Institution of Inter Partes Review, Paper 9
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`at 9-10 (PTAB June 26, 2015) (denying institution for failure to identify the
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`differences between the claimed subject matter and the prior art).
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`Furthermore, in proposing that a person of ordinary skill in the art at the time
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`of the invention would have combined the references in a particular way to meet
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`the claimed invention, an obviousness analysis must support the proposed
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`IPR2016-01449
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`PATENT NO. 8,155,342
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`combination with “some articulated reasoning with some rational underpinning.”
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441
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`F.3d 977, 988 (Fed. Cir. 2006)). A proposed combination cannot be supported
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`based on “mere conclusory statements.” In re Kahn, 441 F.3d at 988. In a petition
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`seeking institution of an inter partes review, “articulated reasons with rational
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`underpinnings” must be found in the petition itself. Whole Space Indus., IPR2015-
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`00488, Paper 14 at 17 (“[C]onclusory labels do not substitute for a fact-based
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`analysis in the Petition establishing what is being modified, and why it would have
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`been obvious to a person of ordinary skill to make the modification”). Id. at 17.
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`The arguments needed to support a conclusion of obviousness may not be
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`incorporated by reference to another document. 37 C.F.R. § 42.6(a)(3)
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`(“Arguments must not be incorporated by reference from one document into
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`another document.”); Cisco Sys., Inc., v. C-Cation Techs., LLC, IPR2014-00454,
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`Decision Denying Institution of Inter Partes Review, Paper 12 at 10 (PTAB Aug.
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`29, 2014); see also Plant Science, Inc. v. The Andersons, Inc., IPR2014-00939,
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`Decision Denying Institution of Inter Partes Review, Paper 8 at 15 (PTAB Dec. 17,
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`2014).
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`As set forth below, the Petition is deficient because it fails to meet the
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`fundamental requirements for demonstrating invalidity. First, the Petition does not
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`explain how the combinations of references teach each element of each claim. See
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`7
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`IPR2016-01449
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`PATENT NO. 8,155,342
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`C.B. Distributors, Inc. v. Fontem Holdings 1 B.V., IPR2013-00387, Paper 43 at 30-
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`31 (PTAB, Dec. 24, 2014). Second, the Petition does not identify the differences
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`between the claims and the asserted references, fails to satisfy the test of KSR,
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`neglects to provide a fact-based rationale for combining the references, and does
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`not explain the specific ways the references are to be combined. Whole Space
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`Indus., IPR2015-00488, Paper 14 at 9 (“[R]egarding the grounds based on
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`obviousness, the Petition does not articulate specific modifications of the
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`references that support its asserted obviousness grounds, nor does it provide a
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`persuasive rationale for the proposed combinations of references.”).
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`Petitioners’ claim charts do not cure these failures. This Board has expressly
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`held that claim charts are not enough to show a reasonable likelihood of success
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`and that merely presenting arguments in claim charts alone is a violation of 37
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`CFR § 42.104(b)(4). See GN Resound A/S v. Oticon A/S, IPR2015-00103, Paper
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`13 at 6 (June 18, 2015) (“It is a requirement of a Petition to align the evidence and
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`arguments with the various limitations of the challenged claims.”) The Board in
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`GN Resound denied institution based on an insufficient detailed explanation of
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`how the asserted references taught or suggested the claims. In a subsequent
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`request for rehearing, the Board acknowledged that the cited portions were present
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`in the claim charts but still rejected the rehearing request because “bare citations
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`and quotes” did not provide a “sufficiently detailed explanation of how the asserted
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`IPR2016-01449
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`PATENT NO. 8,155,342
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`references teach or suggest the claimed limitations.” See GN Resound A/S,
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`IPR2015-00103, Paper 13 at 6.
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`B.
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`The Petition Suffers from Evidentiary Deficiencies
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`The Andrews Declaration fails to identify a level of ordinary skill in the art
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`and explain how a person having ordinary skill in the art would understand and
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`modify the references. Expert testimony that does not disclose the underlying facts
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`or data on which the opinion is based is entitled to little or no weight. 37 CFR
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`42.65(a). Where a Petition relies on expert testimony, the Board has held that the
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`expert’s failure to show how a person of ordinary skill in the art would interpret the
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`references or modify the references is fatal to an obviousness analysis. See, e.g.,
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`Wright Medical Technology, Inc. v. Orthophoenix, LLC, IPR2014-00912, Paper 9
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`at 1 (December 16, 2014) (Institution denied). The Board has also held expert
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`declarations to be unpersuasive for providing broad conclusory statements. See,
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`Zimmer Biomet Holdings, Inc. v. Four Mile Bay, LLC, IPR2016-00011, Paper 8 at
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`11 (April 1, 2016) (Institution denied).
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`The Andrews Declaration does not identify a level of ordinary skill in the
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`art. Identification of the level of ordinary skill in the art is a required factor in any
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`obviousness analysis under the Graham and KSR and fatally affects Mr. Andrews’
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`obviousness analysis of each challenged claim. Further, Mr. Andrews neglects to
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`include––or even mention––a person having ordinary skill in the art in any of his
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`IPR2016-01449
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`PATENT NO. 8,155,342
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`obviousness analyses. The Andrews Declaration is devoid of any explanations as
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`to how a person having ordinary skill in the art would (1) understand the prior art,
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`and (2) modify the prior art references to teach a claim limitation. Meanwhile,
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`each of Petitioner’s obviousness arguments directly cite back to the Andrews
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`Declaration for evidentiary support, including the argument as to whether it would
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`be obvious (to combine the references) to enable or provide wireless integration
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`via Bluetooth. Neither Petitioner nor Mr. Andrews explains how a person having
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`ordinary skill in the art would understand and modify the prior art to meet the
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`claim limitations. Because of these deficiencies, the Andrews Declaration fails to
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`disclose underlying facts for which it bases its obviousness conclusions on;
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`neglects to show how a person of ordinary skill in the art would understand or
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`modify the references; and merely amounts to broad conclusory statements. The
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`Board should find the Andrews Declaration unpersuasive, afford the Andrews
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`Declaration no weight, and find each obviousness allegation to be unsupported and
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`fatally deficient. Accordingly, the Petition should be denied institution on all
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`grounds because the alleged obviousness combinations fall unsupported.
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`C. Claims 49-52, 55-57, 62-64, 66, 68, 71, 73-76, 79, 80, 94, and 95
`Are Not Obvious in View of Tranchina and Silvester (Ground 1)
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` The combination of Tranchina and Silvester does not render the claims
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`addressed in Ground 1 obvious because (1) neither reference teaches or discloses
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`the “audio generated by the portable device” limitation; (2) neither reference
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`IPR2016-01449
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`PATENT NO. 8,155,342
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`teaches an “integration subsystem,” subordinate to another system, (3) Petitioner
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`does not point out the differences between references and the claims; and (3)
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`Petitioner’s arguments for the combination are merely conclusory.
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`All of the independent claims of the ’342 Patent require that the portable
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`audio device play an audio file to generate audio that is subsequently channeled
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`through the integration subsystem to the speakers of the car audio/video system.
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`The claims at issue in this Petition require “audio generated by the portable device”
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`to be received by or transmitted to the integration subsystem as set forth in the
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`following limitation:
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`wherein said integration subsystem . . . receives audio generated by
`the portable device over said wireless communication link for playing
`on the car audio/video system
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`Ex. 1001 at Claim 49. This limitation requires that the portable device contain
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`structure that converts the audio file into audio “generated” on the device, i.e.,
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`audio decoded or produced by the portable device, and that the integration
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`subsystem contain structure that receives the generated audio and relays the audio
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`to the car audio/video system. This is not disclosed in either the Tranchina or
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`Silvester reference.
`1.
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`Neither the Tranchina nor the Silvester Reference Teach or
`Disclose the “Audio Generated by the Portable Device”
`Limitation
`All claims of the ’342 Patent require that the portable device generate the
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`audio. In claim 49, for example, the integration subsystem first “instructs the
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`portable device to play the audio file in response to a user selecting the audio file
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`using controls of the car audio/video system,” and then “receives audio generated
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`by the portable device over said wireless communication link for playing on the car
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`audio/video system.” Ex. 1001 at Claim 49. According to the plain meaning of
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`the claim language, the limitation cannot be met by, for example, a file transfer
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`between a portable device and the integration subsystem, because receiving a file is
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`not “receiving audio generated by the portable device.” Regarding Tranchina,
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`Petitioner appears to concede that Tranchina does not teach or disclose the “audio
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`generated” limitation. Regarding Silvester, Petitioner incorrectly characterizes the
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`reference as disclosing this limitation.
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`Petitioner fails to specifically point to sections in Silvester corresponding to
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`the “audio generated by the portable device.” Petitioner merely states:
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`Silvester describes that the portable media player 200 transmits, via
`the wireless link, album or song titles to the automobile entertainment
`system 100 for display. ¶¶ 22, 24. The system 100 sends, via the
`wireless link, control signals to the media player 200 based on a user’s
`input at a faceplate of the system 100, such as stop, play, rewind, etc.
`¶¶ 20-22. The portable media player disables its own loudspeakers
`and enters a “playback state” to play the selected media by wirelessly
`transmitting a playback signal to the system 100, which is played over
`the loudspeakers of the system 100. (Pet. at 14 citing to ¶¶ 22, 24. Ex.
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`1002, ¶ 12.)
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`Petitioner references a “playback state” but does point to any portion of the
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`reference indicating that audio is generated by a portable device and that the
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`generated audio is received by an interface. Nothing in Petitioner’s discussion of
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`the Silvester or Tranchina references includes a description of the transmittal of
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`decoded audio from a portable device to an integration subsystem. If Petitioner is
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`indeed arguing that “transmitting a playback signal to the system 100” constitutes
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`this limitation, a “playback signal” is not audio generated by a portable device, i.e.
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`decoded ; rather, the playback signal is described by Silvester as “encrypted and
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`compressed playback signal” Ex. 1002 at ¶ 0014. This content is decompressed
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`and decoded (i.e., converted from data such as MP3 into “generated” audio) only
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`in the “decoder 126” which is contained within the “automobile entertainment
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`system 100” and, therefore, not in the portable device. Ex. 1007 ¶ 0024. If audio
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`were generated by the portable device as required by the limitation, the file would
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`not need to be “decompressed and decoded” when it reaches the automobile
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`entertainment system.
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`Nowhere in the Silvester reference is structure that converts the audio file
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`into audio “generated” on the device, i.e., audio decoded or produced by the
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`portable device, and that the integration subsystem contain structure that receives
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`the generated audio and relays the audio to the car audio/video system disclosed.
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`Additionally, as this ground relies on an obviousness combination, Petitioner
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`must explain the differences between the prior art and the claims. Instead,
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`Petitioner is silent as to the differences. For these reasons, and because all
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`independent claims contain this limitation, Ground 1 should be denied.
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`2.
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`Petitioner Fails to Teach or Disclose an “Integration
`Subsystem”
`As discussed above, an "integration subsystem" is exactly that - a subsystem.
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`It is unclear which reference (or portion thereof) Petitioner identifies as disclosing
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`the subsystem. For this additional reason alone, Ground 1 should fail. If Petitioner
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`is in fact arguing that Tranchina discloses an “integration subsystem,” the
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`disclosure falls short. Petitioner does not explain (and the Tranchina reference
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`does not contain) a subsystem, i.e., a system subordinate to another system.
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`Because of this and the reasons above, Ground 1 fails.
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`3.
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`The Alleged Combination is Improper and Does Not
`Address the Deficiencies of Tranchina and Silvester
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`Petitioner does not address whether any of the missing limitations can be
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`reconstructed from the piecemeal disclosures of the references. Petitioner does not
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`admit that any limitation is not met by any of the references and instead attempts to
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`confuse the reader by string-citing via charts without substantial analysis. As
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`states above, Petitioners’ claim charts do not cure these failures because this Board
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`has expressly held that claim charts are not enough to show a reasonable likelihood
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`of success and that merely presenting arguments in claim charts alone is a violation
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`of 37 CFR § 42.104(b)(4). See GN Resound A/S v. Oticon A/S, IPR2015-00103,
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`Paper 13 at 6 (June 18, 2015) (“It is a requirement of a Petition to align the
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`evidence and arguments with the various limitations of the challenged claims.”)
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`Petitioner fails to provide an obviousness analysis based on articulated
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`reasoning with rational underpinning as required by KSR. Petitioner merely states
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`that “such a modification would have been obvious as use of a known technique
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`(wirelessly transmitting device control commands and multimedia data in an
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`automobile entertainment system to improve similar devices (separate control and
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`playback between an automobile entertainment system and an integrated device) in
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`the same way to obtain predictable results (remote control of a portable device and
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`playback over the automobile entertainment system).” Pet. at 20-21. This
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`conclusory statement does not provide any reason to actually combine the
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`references, let alone the level of articulated reasoning with rational underpinning
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`that is required to demonstrate obviousness.
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`Petitioner further states that “Silvester describes the advantages of playing
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`the content from a portable media player in the superior quality entertainment
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`system of an automobile . . . and Shibasaki describes the demand for imputing 'any
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`desired music data' from a portable media player 'so that the user can listen to the
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`music piece'.” Pet. 20. For this reason and the reasons above, Ground 1 should
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`be denied. These statements fail to address the limitation that the “audio [is]
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`generated from a portable device.” This limitation is not disclosed by Silvester or
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`Tranchina. Regardless, Petitioner has failed to point to motivation to include the
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`decoding of audio on a portable device to be transmitted to an “